Ugly v OHMI - Group Lottuss (COYOTE UGLY) (Judgment) [2016] EUECJ T-778/14 (03 March 2016)

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(Community trade mark — Opposition proceedings — Application for the Community word mark COYOTE UGLY — Relative grounds for refusal — Revocation of the earlier Community word mark — Article 8(1)(a) and (b) of Regulation (EC) No 207/2009 — No non-registered mark — Article 8(4) of Regulation No 207/2009 — No well-known mark within the meaning of Article 6 bis of the Paris Convention — Article 8(2)(c) of Regulation No 207/2009 — Rejection of the opposition)

Ugly, Inc., established in New York, New York (United States), represented by T. St Quintin, Barrister, K. Gilbert and C. Mackey, Solicitors,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Lukošiūtė, acting as Agent,

ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 16 September 2014 (Case R 1369/2013-5), relating to opposition proceedings between Ugly Inc. and Group Lottuss Corp.,

composed of S. Frimodt Nielsen (Rapporteur), President, F. Dehousse and A.M. Collins, Judges,

having regard to the application lodged at the Court Registry on 26 November 2014,

having regard to the fact that no application for a hearing was submitted by the parties within the period of three weeks from the notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 8 May 2007, Group Lottuss Corp., SL, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994, L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

3 The services in respect of which registration was sought are in Classes 41 and 43 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description:

– Class 41: ‘Entertainment, discotheques, dance halls and cultural activities’;

4 The Community trade mark application was published in Community Trade Marks Bulletin No 56/2007 of 1 October 2007.

5 On 28 December 2007, the applicant, Ugly Inc., filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against the registration of the mark applied for, on the basis of, inter alia:

– the earlier Community word mark COYOTE UGLY, filed on 4 September 2000 and registered on 23 October 2001 under number 1837707 for goods in Classes 14, 16, 21, 25, 32 and 34;

– the non-registered mark COYOTE UGLY, used in the course of trade in all the Member States, for goods and services in Classes 14, 16, 21, 25, 32, 33, 34, 41 and 42 corresponding to the following description:

– Class 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments’;

– Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks’;

– Class 21: ‘Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes’;

– Class 32: ‘Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’;

– Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities; nightclub services’;

– Class 42: ‘Providing of food and drink; restaurant, bar and catering services; hotel and motel services; provision of temporary accommodation; medical, hygiene and beauty care; veterinary and agricultural services; legal services; scientific and industrial research; computer programming.’

– a well-known mark within the meaning of Article 6 bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended (‘the Paris Convention’), COYOTE UGLY, for goods and services in Classes 9, 14, 16, 21, 25, 32, 34, 41 and 42 corresponding to the following description:

– Class 32: ‘Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’;

– Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities; nightclub services’;

6 The grounds put forward in support of the opposition were those referred to in Article 8(1)(a) and (b) of Regulation No 40/94 (now Article 8(1)(a) and (b) of Regulation No 207/2009), Article 8(2)(c) of Regulation No 40/94 (now Article 8(2)(c) of Regulation No 207/2009), read in conjunction with Article 8(1)(a) and (b) of that regulation, Article 8(4) of Regulation No 40/94 (now Article 8(4) of Regulation No 207/2009) and Article 8(5) of Regulation No 40/94 (now Article 8(5) of Regulation No 207/2009). The opposition was based on all the goods and services covered by the earlier rights. It was directed against all the services covered by the mark applied for.

8 On 19 July 2013 the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

9 By decision of 16 September 2014 (‘the contested decision’), the Fifth Board of Appeal of OHIM confirmed the decision of the Opposition Division and rejected the appeal in its entirety. In particular, it found, first, as regards the earlier Community word mark COYOTE UGLY, that as a result of its revocation, that mark was no longer valid at the date on which the opposition was filed and consequently could not validly be invoked. Secondly, as regards the non-registered mark COYOTE UGLY on which the applicant relied, the Board of Appeal considered that the evidence adduced by the applicant, focused for the most part on a film and its soundtrack, did not prove that the earlier mark relied on had been used on behalf of the applicant in the course of trade in the European Union in connection with the goods and services concerned. Thirdly, as regards the well-known mark within the meaning of Article 6 bis of the Paris Convention, COYOTE UGLY, claimed by the applicant, the Board of Appeal considered that the applicant had not demonstrated, inter alia, that its operation of bars under the name COYOTE UGLY was well known as such in the European Union.

– annul the contested decision and remit the case back to the Opposition Division;

12 In support of the action, the applicant relies on two pleas in law. By the first plea in law, the applicant alleges that the Board of Appeal erred in assessing the effect of the declaration of revocation of the earlier Community word mark COYOTE UGLY on the opposition proceedings. By the second plea in law, the applicant alleges that the Board of Appeal erred in assessing the evidence of the existence of certain earlier rights under Article 8(2)(c) and (4) of Regulation No 207/2009.

The first plea in law, alleging that the Board of Appeal erred in assessing the effects of the declaration of revocation of the earlier Community word mark COYOTE UGLY

13 The applicant submits that, although the earlier Community word mark COYOTE UGLY had been revoked, the Board of Appeal should have regarded that mark as an earlier mark producing effects during the assessment of the opposition.

15 It must be recalled that in the event of revocation, in accordance with Article 55(1) of Regulation No 207/2009, the Community trade mark is deemed not to have had, as from the date of the application for revocation, the effects specified in that regulation.

16 In the present case, it must be noted that, on the date when Group Lottuss Corp. lodged its application for the mark applied for, namely 8 May 2007, it also lodged an application for revocation of the earlier Community word mark COYOTE UGLY, held by the applicant. By decision of the Cancellation Division of 11 July 2008, the applicant’s rights were revoked for lack of use, with effect from 8 May 2007. On 11 September 2009, that decision was confirmed by the First Board of Appeal.

17 As regards the conflict between the marks at issue in the present proceedings, the applicant filed a notice of opposition against the mark applied for on 28 December 2007. By decision of 23 May 2013, the Opposition Division rejected the opposition, which was confirmed by the contested decision on 16 September 2014.

18 It must therefore be held, as the Board of Appeal correctly found in paragraph 16 of the contested decision, that since the earlier Community word mark COYOTE UGLY was revoked as from 8 May 2007, the date of the application for revocation, that mark is deemed not to have had the effects specified in Regulation No 207/2009 as from that date. Accordingly, on the date when the opposition was lodged, 28 December 2007, the earlier Community word mark COYOTE UGLY no longer had the effects specified in Regulation No 207/2009.

19 Therefore, contrary to the applicant’s submission, the Board of Appeal did not commit an error of assessment in considering that the earlier Community word mark COYOTE UGLY did not constitute a valid basis in the opposition proceedings in the present case.

The second plea in law, alleging that the Board of Appeal erred in assessing the evidence of the existence of certain earlier rights under Article 8(4) and (2)(c) of Regulation No 207/2009

21 The applicant submits that the Board of Appeal did not properly assess the evidence adduced in the course of the proceedings. It argues that, if the Board of Appeal had properly assessed that evidence, it should have concluded that, at the very least as regards the services in Class 42, the applicant was the holder, at the date the mark applied for was filed, of the non-registered mark COYOTE UGLY, under Article 8(4) of Regulation No 207/2009, and of the well-known mark COYOTE UGLY, within the meaning of Article 8(2)(c) of that regulation. In particular, the applicant submits that the Board of Appeal rejected all the observations set out in the document entitled ‘Facts, Evidence and Argument’, which was drafted in English, on the ground that they referred to documents in Spanish. In addition, the Board of Appeal wrongly challenged the probative value of the printout from the ‘Wikipedia’ website presented as evidence. Lastly, the applicant submits that the Board of Appeal did not properly examine the evidence comprising the results of searches for the terms ‘coyote ugly’ carried out using an Internet search engine. In the alternative, the applicant submits that the Board of Appeal did not state reasons for its rejection of certain pieces of evidence.

23 In the present case, it must be noted that, in order to prove the existence of its non-registered earlier mark and its well-known earlier mark COYOTE UGLY, the applicant adduced the following evidence before the Board of Appeal:

– A printout from the website ‘imdb.com’, dated 22 June 2012, containing gross sales figures for the film Coyote Ugly, mainly concerning the year 2000. Those figures, as the Board of Appeal rightly pointed out in paragraph 34 of the contested decision, chiefly concern the United States, but there are also figures concerning some EU Member States, such as the United Kingdom and Spain. According to that document, the film grossed significant amounts around the world;

– A printout from ‘Wikipedia’, dated 22 June 2012. That document indicates inter alia that the film Coyote Ugly is inspired by the ‘Coyote Ugly Saloon’ opened in 1993 and situated in New York, New York (United States). That document also indicates that the soundtrack of the film in question was, in 2000-2001, one of the bestselling albums in some EU Member States, particularly in Austria and Denmark;

– A printout from the website ‘www.imdb.com’, dated 22 June 2012, containing a list of awards won by the film Coyote Ugly between 2001 and 2003;

– Results of searches carried out on an Internet search engine for the terms ‘coyote ugly’, some of which are dated 2003 and others which are dated 9 July 2012. Those results mainly refer to the film Coyote Ugly and to the ‘Coyote Ugly Saloon’ bars in various cities in the United States;

– Copies of extracts from the United States Copyright Registry attesting to the registration in 2000 of the motion picture Coyote Ugly, the Coyote Ugly press kit composed of photographs, a one-sheet Coyote Ugly poster, the Coyote Ugly electronic press kit, the Coyote Ugly soundtrack and the theme song from the film Coyote Ugly, ‘Can’t Fight the Moonlight’, without any references to the name of the applicant;

– An undated sworn statement, signed by the applicant’s lawyer responsible for intellectual property issues in the United States, the admissibility of which remained unresolved before the Board of Appeal.

24 The applicant submits, in essence, that as the film Coyote Ugly and its soundtrack were successful, the mere fact that a small proportion of viewers, or of persons who bought the soundtrack album, particularly in the United Kingdom, are aware of the theme of the film — namely that it relates to the activities of a bar with the trade name COYOTE UGLY — suffices to demonstrate that the sign COYOTE UGLY is a non-registered earlier mark deserving of protection. In addition, the applicant submits that the Board of Appeal erred by not acknowledging that, in the context of the examination of the ground based on Article 8(4) at issue and, in particular, under the law of the United Kingdom of Great Britain and Northern Ireland in relation to passing off (‘the law in relation to passing off’), it is not necessary that the services actually be offered in the United Kingdom.

25 OHIM contests the applicant’s arguments and submits, inter alia, that the argument based on the law in relation to passing off is neither admissible, since it was put forward for the first time in the present proceedings, nor well-founded.

26 Under Article 8(4) of Regulation No 207/2009, the proprietor of a sign other than a mark may oppose the registration of a Community trade mark if that sign satisfies all of four conditions: the sign must be used in the course of trade; it must be of more than mere local significance; the right to that sign must have been acquired in accordance with the law of the Member State in which the sign was used prior to the date of application for registration of the Community trade mark; and, lastly, the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark. Those four conditions limit the number of signs other than marks which may be relied on to dispute the validity of a Community trade mark throughout the European Union in accordance with Article 1(2) of Regulation No 207/2009 (judgment of 24 March 2009 in Moreira da Fonseca v OHIM — General Óptica (GENERAL OPTICA), T‑318/06 to T‑321/06, ECR, EU:T:2009:77, paragraph 32).

27 The first two conditions, namely those relating to the use of the sign relied on and its significance, which must be more than merely local, are apparent from the very wording of Article 8(4) of Regulation No 207/2009 and must therefore be interpreted in the light of EU law. That regulation thus sets out uniform standards relating to the use of signs and their significance, which are consistent with the principles underlying the system established by that regulation (judgment in GENERAL OPTICA, cited in paragraph 26 above, EU:T:2009:77, paragraph 33).

28 As regards the condition relating to the use in the course of trade of the sign relied on, it follows from the case-law that a sign is used in the course of trade where that use occurs in the context of commercial activity with a view to economic advantage and not as a private matter (see judgment of 14 May 2013 in Morelli v OHIM –Associazone nazionale circolo del popolo della libertà (PARTITO DELLA LIBERTA’), T‑321/11 and T‑322/11, EU:T:2013:240, cited in paragraph 33 and the case-law cited).

29 It also follows from the case-law that, in order to be capable of preventing registration of a new sign on the basis of Article 8(4) of Regulation No 207/2009, the sign relied on in support of the opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory (judgment of 29 March 2011 in Anheuser-Busch v Budějovický Budvar, C‑96/09 P, ECR, EU:C:2011:189, paragraph 159).

30 In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of that sign as a distinctive element vis-à-vis its addressees, namely purchasers and consumers as well as suppliers and competitors (judgment in Anheuser-Busch v Budějovický Budvar, cited in paragraph 29 above, EU:C:2011:189, paragraph 160).

31 Lastly, it is necessary to apply to the requirement for use in the course of trade of the sign relied on in opposition the same temporal condition as that expressly laid down in Article 8(4)(a) of Regulation No 207/2009 with regard to acquisition of the right to the sign, that is to say, that of the date of application for registration of the Community trade mark (judgment in Anheuser-Busch v Budějovický Budvar, cited in paragraph 29 above, EU:C:2011:189, paragraphs 166 to 168).

32 In the present case, it must be recalled that the applicant, in order to prove the use of its trade name in the course of trade, adduced the evidence referred to in paragraph 23 above.

33 It must be noted, first of all, that, according to Rule 19(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), the evidence submitted in support of the opposition must be submitted in the language of the proceedings or accompanied by a translation into that language. According to Rule 19(4) of that regulation, ‘[OHIM] shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by [OHIM]’.

34 Thus, if evidence is to be taken into account in opposition proceedings, it must comply with the language requirements laid down by Rule 19(3) of Regulation No 2868/95 (see, by analogy, judgment of 30 June 2004 in GE Betz v OHIM — Atofina Chemicals (BIOMATE), T‑107/02, ECR, EU:T:2004:196, paragraph 73).

35 Accordingly, the Board of Appeal did not commit an error of assessment, in paragraph 35 of the contested decision, in finding that the documents submitted in Spanish, which had not been translated into the language of the proceedings, English in the present case, had to be disregarded.

36 Furthermore, as regards the observations accompanying those documents, it does not appear from the contested decision that those observations were not taken into account by the Board of Appeal. As OHIM rightly pointed out, those observations concern inter alia the fact that the film entitled Coyote Ugly is inspired by the history of the bar of the same name operated by the applicant in New York, and that that fact was widely publicised during the promotion of the film. It must be noted that, in paragraph 57 of the contested decision, the Board of Appeal referred to the applicant’s observations that the film Coyote Ugly is based on a true story and that this was widely publicised at the time of the film’s release.

37 As regards the printout taken from ‘Wikipedia’, it must be noted that, since ‘Wikipedia’ is a collective encyclopaedia established on the internet, whose content may be amended at any time and, in certain cases, by any visitor, even anonymously, information taken from its articles lack certainty (see, to that effect, judgment of 10 February 2010 in O2 (Germany) v OHIM (Homezone), T‑344/07, ECR, EU:T:2010:35, paragraph 46).

38 Accordingly, the Board of Appeal did not commit an error of assessment in considering, in paragraph 36 of the contested decision, that the printout in question, since it was taken from ‘Wikipedia’, was of low probative value. In addition, although that printout indeed indicates, as the applicant submits, that the film Coyote Ugly is inspired by the ‘Coyote Ugly Saloon’ bar situated in New York City, it nevertheless does not suffice, either by itself or in conjunction with other evidence, to prove the use of the non-registered mark relied on in EU Member States.

39 As regards the applicant’s allegations that the Board of Appeal did not examine the evidence comprising the results of searches carried out using a search engine, it must be pointed out that the Board of Appeal correctly analysed the evidence adduced before it in paragraph 34 of the contested decision. Thus, it rightly observed that the results in question mainly refer to the film Coyote Ugly and to the ‘Coyote Ugly Saloon’ bars in various cities in the United States.

40 As OHIM submits, the fact that the Board of Appeal did not expressly refer to those search results does not mean that they were rejected or ignored. It can be seen from the contested decision that the Board of Appeal carried out a detailed examination of each of the applicant’s arguments in the light of all the evidence, including the search results in question, with the exception of those that it rightly disregarded (see paragraph 35 above). Accordingly, the Board of Appeal cannot be criticised for disregarding the evidence comprising the internet search results for the terms ‘coyote ugly’.

41 As regards the evidence taken as a whole, it must be pointed out that it mainly concerns the film and its soundtrack, which, moreover, the applicant acknowledges. That film and its soundtrack could be regarded, as the Board of Appeal rightly pointed out in paragraph 37 of the contested decision, as falling under the ‘entertainment’ services in Class 41 invoked by the applicant.

42 However, it can be seen from the evidence submitted, in particular the extracts from the United States Copyright Registry, that the copyright in the film and the copyright in the soundtrack are not held by the applicant.

43 Moreover, as the Board of Appeal observed in paragraph 42 of the contested decision, it does not emerge from the evidence adduced that the use of the sign COYOTE UGLY by the producers of the film was actually on behalf of the applicant.

44 Moreover, it must be noted that the applicant has not demonstrated how the evidence adduced proves the use of the non-registered mark relied on for the goods and services in Classes 14, 16, 21, 25, 32, 33, 34 and 41.

45 As regards the services in Class 42, it must be emphasised that the applicant merely argues that the film Coyote Ugly is inspired by its business, namely the operation of a bar in New York, and that, since that film and its soundtrack were successful, it suffices that a substantial part of viewers, or persons who bought the soundtrack album, are aware of the theme of the film in order for the sign COYOTE UGLY to constitute a non-registered mark within the meaning of Article 8(4) of Regulation No 207/2009. The applicant also submits that, when examining the ground based on Article 8(4) of that regulation and, in particular, under the law in relation to passing off, it is not necessary that the services in question actually be offered in the United Kingdom.

46 In accordance with the case-law cited in paragraph 27 above, and as OHIM rightly points out, the condition relating to use is apparent from the very wording of Article 8(4) of Regulation No 207/2009 and must be interpreted in the light of EU law. In addition, under that article, the condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a Community trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights (see judgment of 30 June 2009 in Danjaq v OHIM — Mission Productions (Dr. No), T‑435/05, ECR, EU:T:2009:226, paragraph 44). Thus, where the use of the sign at issue in one or more Member States is not established, it is not necessary to examine whether that sign fulfils the other conditions set out in Article 8(4) of Regulation No 207/2009, since those conditions are cumulative.

47 In the present case, without it being necessary to rule on the admissibility of the applicant’s argument based on the law in relation to passing off, it must be held that none of the evidence adduced by the applicant proves that the non-registered earlier mark relied on was used in the European Union.

48 Accordingly, the Board of Appeal did not commit an error of assessment in finding, in paragraphs 51 and 52 of the contested decision, that the condition relating to use in the course of trade was not fulfilled in the present case and, accordingly, rejecting the ground of opposition based on a non-registered earlier mark pursuant to Article 8(4) of Regulation No 207/2009.

49 As it did for its alleged non-registered mark, the applicant submits, in essence, that, given the success and fame of the film Coyote Ugly and its soundtrack, the mere fact that a small proportion of viewers, or of persons who bought the soundtrack album, particularly in the United Kingdom, are aware of the theme of the film — namely that it relates to the activities of a bar with the trade name COYOTE UGLY — suffices for that sign to reach the required threshold to constitute a well-known mark.

51 It should be recalled that, under Article 8(2)(c) of Regulation No 207/2009, for the purposes of Article 8(1) thereof, ‘earlier trade marks’ means trade marks which, on the date of application for registration of the Community trade mark or, where appropriate, of the priority claimed in respect of the application for registration of the Community trade mark, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6 bis of the Paris Convention. It must also be recalled that well-known marks enjoy protection against a likelihood of confusion irrespective of whether proof of registration is provided (judgment of 11 July 2007 Mülhens v OHIM — Minoronzoni (TOSCA BLU), T‑150/04, ECR, EU:T:2007:214, paragraph 51).

52 Under Article 6 bis of the Paris Convention, that convention’s Member States undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trade mark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of that convention and used for identical or similar goods (judgment of 22 June 2010 in Montero Padilla v OHIM — Padilla Requena (JOSE PADILLA), T‑255/08, ECR, EU:T:2010:249, paragraph 52).

53 In addition, according to Rule 19(2)(b) of Regulation No 2868/95, if the opposition is based on a well-known mark, the notice of opposition must be accompanied by evidence showing that this mark is well known in the relevant territory.

54 It is therefore for the applicant to adduce proof that, at the date the mark applied for was filed, the earlier mark COYOTE UGLY relied on was well known in a Member State.

55 Since Article 8(2)(c) of Regulation No 207/2009 refers to trade marks which are ‘well-known in a Member State, in the sense in which the words “well-known” are used in Article 6 bis of the Paris Convention’, it is necessary, in order to ascertain how the existence of a well-known mark can be proved, to refer to the guidelines for the interpretation of Article 6 bis (see judgment of 20 March 2013 in Bimbo v OHIM — Café do Brasil (Caffè KIMBO), T‑277/12, EU:T:2013:146, paragraph 21 and the case-law cited).

56 Under Article 2 of the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organisation (WIPO) at the 34th series of meetings of the assemblies of the Member States of the WIPO (20 to 29 September 1999), in determining whether a mark is a well-known mark within the meaning of the Paris Convention, the competent authority can take into account any circumstances from which it may be inferred that the mark is well known, including: the degree of knowledge or recognition of the mark in the relevant sector of the public; the duration, extent and geographical area of any use of the mark; the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies; the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent to which they reflect use or recognition of the mark; the record of successful enforcement of rights in the mark, in particular, the extent to which the mark has been recognised as well known by competent authorities; the value associated with the mark (see judgment in Caffè KIMBO, cited in paragraph 55 above, EU:T:2013:146, paragraph 22 and the case-law cited).

57 In order to establish the existence of an earlier mark which is well known in the European Union, the applicant adduced before the Board of Appeal the evidence referred to in paragraph 23 above.

58 As has already been pointed out, that evidence, taken in its entirety, mainly concerns the success of the film entitled Coyote Ugly and its soundtrack and it is apparent from that evidence that the copyright in the film in question and the copyright in the soundtrack are not held by the applicant.

59 It must also be noted that the applicant has not demonstrated how the evidence adduced proves the alleged use of the well-known earlier mark in respect of the goods and services in Classes 14, 16, 21, 25, 32, 33, 34, 41 and 42. The same is true for the goods in Class 9.

60 However, according to Article 2 of the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, mentioned in paragraph 56 above, in particular paragraph 3(a)(i), ‘a Member State shall not require, as a condition for determining whether a mark is a well-known mark that the mark has been used in ... the Member State’. Well-known marks therefore enjoy protection against the likelihood of confusion irrespective of their use in the relevant territory, which the Board of Appeal rightly acknowledged in paragraph 56 of the contested decision.

61 In the present case, as the Board of Appeal found in paragraph 57 of the contested decision, the evidence adduced does not show that the applicant’s business — namely the operation of bars under the name COYOTE UGLY in various locations in the United States and in particular in New York — is well known as such in the European Union or in its Member States. The evidence, although it shows that the film Coyote Ugly and its soundtrack were successful in 2000, does not demonstrate that the applicant’s business was widely associated with the film by the relevant public at the date the mark applied for was filed.

62 Contrary to what the applicant submits, it cannot be inferred from the evidence adduced, and in particular from the printout taken from ‘Wikipedia’ and the results of searches carried out using a search engine, to which the applicant draws the attention of the Court, that it is common knowledge in the European Union or in one of its Member States that the film Coyote Ugly was inspired by the applicant’s business. It must be found that the evidence adduced provides little indication, or even no indication, of the degree of knowledge or of recognition of the mark, of the intensity of its use, of its market share or of the promotion or media coverage that it may have enjoyed.

63 In light of the foregoing, and of the findings in paragraphs 33 to 40 above, it must be found that the applicant has not proved that the sign COYOTE UGLY was well known as a mark in respect of the goods and services concerned in the European Union or in one of its Member States.

64 It follows that the Board of Appeal did not err in assessing the evidence put forward by the applicant and in finding that the applicant had not established the existence of a well-known earlier mark under Article 8(2)(c) of Regulation No 207/2009.

The alleged failure to state adequate reasons in the contested decision as regards the rejection of certain evidence by the Board of Appeal

65 The applicant submits that the Board of Appeal did not properly state reasons for the rejection of the evidence adduced in support of the opposition based on the applicant’s alleged non-registered and well-known marks. In particular, the applicant argues that the Board of Appeal did not state reasons for the rejection of the observations contained in the document entitled ‘Facts, Evidence and Argument’, which refers to documents in Spanish. In addition, the applicant submits that the Board of Appeal rejected the evidence comprising the results of searches carried out on an internet search engine for the terms ‘coyote ugly’, without stating reasons for its decision.

66 Under Article 75 of Regulation No 207/2009, decisions of OHIM must state the reasons on which they are based. The obligation to state reasons, as thus laid down, has the same scope as that deriving from Article 296 TFEU, as consistently interpreted in case-law, according to which the statement of reasons must disclose, clearly and unequivocally, the reasoning of the author of the measure, in such a way as to enable, on the one hand, interested parties to ascertain the reasons for the measure in order to enable them to protect their rights, and, on the other hand, the European Union judicature to exercise its power to review the legality of the decision (judgments of 21 October 2004 in KWS Saat v OHIM, C‑447/02 P, ECR, EU:C:2004:649, paragraphs 64 and 65, and 25 October 2012 in riha v OHIM — Lidl Stiftung (VITAL&FIT), T‑552/10, EU:T:2012:576, paragraph 18).

67 However, in stating the reasons for the decisions which they are called upon to make, the Boards of Appeal are not obliged to take a view on every argument which the parties have submitted to them. It is sufficient if they set out the facts and legal considerations having decisive importance in the context of the decision (judgments of 12 November 2008 in Shaker v OHIM — Limiñana y Botella (Limoncello della Costiera Amalfitana shaker), T‑7/04, ECR, EU:T:2008:481, paragraph 81, and VITAL&FIT, cited in paragraph 66 above, EU:T:2012:576, paragraph 26).

68 In the present case, it must be emphasised that it can be seen from the examination of the contested decision that only the documents which were not translated into the language of the proceedings, namely a document in Spanish and printouts from the Spanish websites concerning the film Coyote Ugly, were expressly rejected by the Board of Appeal.

69 It has been established, in paragraphs 33 to 35 above, that the Board of Appeal was justified in rejecting the evidence which had not been translated into the language of the proceedings. The Board of Appeal expressly mentioned, in paragraph 35 of the contested decision, that the documents had to be disregarded because they had not been translated. It must be held that, by that statement of reasons, the Board of Appeal presented in a sufficiently clear manner the reason why it considered that it had to reject the documents in question. In addition, it must be recalled, as has been established in paragraph 36 above, that it does not appear from the contested decision that the applicant’s observations referring to those documents were not taken into account by the Board of Appeal.

70 In addition, as has been established in paragraphs 39 to 40 above, the applicant cannot criticise the Board of Appeal for having rejected the evidence comprising the results of searches carried out on a search engine.

71 In any event, as regards, in the first place, the rejection of the opposition based on an alleged non-registered mark, the considerations put forward by the Board of Appeal in paragraphs 24 to 52 of the contested decision rightly highlighted that the applicant had not demonstrated that it had used the sign COYOTE UGLY in the course of trade, which is a sufficient ground on which to reject this plea. Those arguments allowed the applicant to know the justification for the decision taken so as to enable it to protect its rights, and also enable the Court to exercise its power to review the legality of the contested decision.

72 In addition, as regards the rejection of the opposition based on an alleged well-known mark, it is clear from the contested decision that the Board of Appeal stated, in paragraphs 53 to 58 of that decision, the reasons why it considered, in the light of the various matters on the file, that the applicant had not succeeded in establishing the existence of a well-known mark. The Board of Appeal explained that none of the evidence adduced — which included inter alia the searches carried out on a search engine to which the applicant draws the Court’s attention — is such as to establish that a substantial part of the relevant public of the European Union associated the film with the bar of the same name located in New York. That reasoning enabled the applicant to ascertain the reasons for the decision taken in order to defend its rights, and also allows the Court to exercise its review of the legality of the contested decision.

73 In conclusion, the Board of Appeal properly stated reasons for its assessment of the evidence adduced by the applicant for the purpose of proving the existence of its alleged non-registered and well-known earlier marks.

74 Accordingly, in the light of all of the foregoing, the second plea in law must be dismissed in its entirety.

75 Since none of the pleas in law invoked by the applicant are well founded, the action seeking the annulment of the contested decision and the remittance of the case back to the Opposition Division must be dismissed in its entirety.

76 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Ugly v OHMI - Group Lottuss (COYOTE UGLY) (Judgment) [2016] EUECJ T-778/14 (03 March 2016) URL: http://www.bailii.org/eu/cases/EUECJ/2016/T77814.html Cite as: [2016] EUECJ T-778/14, ECLI:EU:T:2016:122, EU:T:2016:122

Court of Justice of the European Communities (including Court of First Instance Decisions)